Bausch & Lomb Incorporatedv.Karl Storz GmbH & Co. KG

Trademark Trial and Appeal Board

May 28, 2008

No. 91174518 (T.T.A.B. May. 28, 2008)

MBA Mailed: May 28, 2008

Opposition No. 91174518
Bausch & Lomb Incorporated

v.

Karl Storz GmbH & Co. KG

Before Walters, Zervas and Mermelstein, Administrative
Trademark Judges

By the Board:
Karl Storz GmbH & Co. KG (“applicant”) seeks to
register the mark shown below

(“Applicant’s Mark”) for surgical, medical and veterinary
instruments,1 and registration is opposed by Bausch & Lomb
Incorporated (“opposer”). Opposer alleges that: (1)
Applicant’s Mark is confusingly similar to opposer’s mark

1 Application Serial No. 78692415, filed August 15, 2005 under
Section 44(e), for “Surgical, medical and veterinary instruments
and apparatus, namely surgical and medical apparatus and
instruments for use in general and endoscopic surgery; artificial
limbs, eyes and teeth; orthopedic articles, namely, suture
materials.”

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition No. 91174518
2
STORZ, which is used and registered,2 in typed and stylized
forms, for surgical instruments and related services; (2)
Applicant’s Mark “dilutes the distinctive quality of
Opposer’s STORZ Marks;” (3) “Applicant’s use and attempted
registration of Applicant’s STORZ Mark violate the terms of”
a 1982 agreement between the parties (the “Agreement,”
attached to opposer’s motion as Exhibit 8); and (4)
“Applicant’s claimed rights in, and attempted registration
of, Applicant’s STORZ Mark constitute fraud on the USPTO, as
Applicant knows that it does not have the right to claim
rights in, or obtain a registration for, this purported mark
pursuant to the Agreement.” Applicant, in its answer,
denies the salient allegations in the notice of opposition,
and raises a number of affirmative defenses, including
estoppel based on the parties’ Agreement and res judicata
based on final decisions issued in prior Board proceedings
between the parties.

2 Registration Nos.: (a) 1181498, issued December 1981, based
on a date of first use in commerce of 1940 for STORZ in typed
form for “Surgical Instrument Repair and Restoration Services”
and “Custom Design of Surgical Instruments;” (b) 2378031, issued
August 15, 2000, based on a date of first use in commerce of
March 1, 1927 for STORZ (stylized)for “ophthalmic surgical
instruments, namely instruments used in cataract and other
ophthalmic related surgery;” (c) 2925184, issued February 8,
2005, based on a date of first use in commerce of March 1, 1927
for STORZ (stylized) for “ophthalmic surgical instruments and
devices used in diagnosing eye conditions and performing
ophthalmic surgical procedures and component parts thereof …;”
and (d) 3116601, issued July 18, 2006, based on a date of first
use in commerce of January 1, 1940 for STORZ (stylized) for
“repair and restoration of surgical instruments.”

Opposition No. 91174518
3
This case now comes up for consideration of opposer’s
motion, filed October 4, 2007, seeking summary judgment on
its pleaded claims of likelihood of confusion and fraud.3
Applicant contests opposer’s motion, which is fully briefed
and ready for decision. Because the parties’ arguments are
inextricably intertwined with their Agreement, we address it
first, prior to considering the parties’ arguments with
respect to opposer’s motion.
I. The Parties’ Agreement
Applicant and opposer’s predecessor in interest entered
into the Agreement on April 26, 1982. Opposer’s Motion Ex.
8. The Agreement recites the parties’ respective rights to
marks containing STORZ, and states that “the parties hereto
wish to resolve the differences between them as to the
registration and use of their respective marks in all
countries of the world … .” Id. (emphasis added). The
Agreement’s primary purpose “is to define the ways in which
the word ‘Storz’ can be used as a trademark or service mark
or as part of a trademark or service mark” by the parties,

3 Opposer also seeks summary judgment on an unpleaded claim
that “Applicant does not and did not at the time of its
Application have a bona fide intention to use the STORZ THE WORLD
OF ENDOSCOPY mark in commerce on or in connection with the
identified goods or services ….” Although opposer informally
seeks leave to amend its notice of opposition to include this
claim, it does so only through a single sentence in its reply
brief, and applicant has therefore not had the opportunity to
respond to this “motion.” Accordingly, this unpleaded claim will
not be considered. Paramount Pictures Corp. v. White, 31 USPQ2d
1768, 1772 (TTAB 1994) (summary judgment is not appropriate on
unpleaded issue).
Opposition No. 91174518
4
and indeed, the Agreement specifies how each party may “use
the word ‘Storz’ in the trademark or service mark sense.”
Id. ¶¶ 2, 3. The word “STORZ” may be used “only as
specified” in the Agreement. Id. ¶ 3.
The Agreement provides that applicant may use: (1) KARL
STORZ GERMANY; (2) STORZ-GERMANY; (3) KARL STORZ; (4) KARL
STORZ USA; (5) KARL STORZ ENDOSCOPY-AMERICA; (6) KARL STORZ-
ENDOSCOPY; (7) STORZ ENDOSKOP; (8) KARL STORZ ENDOSKOP;
and(9) KS STORZ. Id. ¶ 3. It further provides that “[t]he
initial ‘K’ may be substituted for ‘KARL’ in any of the
foregoing,” and that applicant “may supplement any of the
above examples with additional trademark formatives, whether
by way of letters, numbers, words, syllable (sic), or
designs.” Id. Provided applicant complies with these
requirements, opposer may not “raise any objections in any
manner if KARL STORZ uses any of the marks specified … in
any country of the world or applies for registration of any
of such marks in any country of the world.” Id. ¶ 8.
While opposer’s motion does not specifically argue that
Applicant’s Mark should be refused registration based on the
Agreement alone, opposer asserts that the Agreement “does
not allow Applicant to use [Applicant’s Mark] or any other
variation using the word STORZ without the qualifiers Karl,
K., Germany or the German word ‘Endoskop.’” Applicant
claims, however, that Applicant’s Mark “is formed by
Opposition No. 91174518
5
supplementing STORZ ENDOSKOP with approved formatives,”
specifically “the suffix ‘opy.’” According to applicant,
opposer “placed no limitation on [applicant’s] use of
supplemented STORZ ENDOSKOP marks such as the STORZ THE
WORLD OF ENDOSCOPY marks at issue, although [opposer] could
have done so.”
There is no dispute that on February 23, 1989,
opposer’s predecessor in interest objected in writing to
applicant’s use of Applicant’s Mark. Although applicant
responded in writing to this objection on April 3 and
December 8, 1989, opposer did not pursue its objection to
the use of Applicant’s Mark again until 2003. Opposer
claims, and applicant does not dispute, that opposer
“opposed [Applicant’s Mark] in Australia in August of 2003,
in Israel in October of 2004, and in Pakistan in December of
2004.” However, applicant contends that because opposer did
not pursue its objection to the use of Applicant’s Mark
between 1989 and 2003, applicant was “under the impression
that [opposer] had acquiesced to its use of [Applicant’s
Mark].”
II. Opposer’s Motion
A. Fraud
Opposer’s motion for summary judgment on its fraud
claim is based on applicant’s April 28, 2006 response to a
March 19, 2006 office action which refused registration of
Opposition No. 91174518
6
Applicant’s Mark based on an alleged likelihood of confusion
with several of opposer’s registrations. In its response to
the office action, applicant: (a) stated that opposer and
applicant “reached a consent agreement regarding use and
registration of marks featuring wording STORZ;” (b) included
a complete copy of the Agreement as an exhibit; and (c)
argued that Applicant’s Mark “is a supplemented STORZ
ENDOSKOP mark in accordance with the Agreement.”
According to opposer, “[t]here can be no question that
both Applicant and Mr. Whitmyer, who signed the Response,
were well aware that [opposer] objected rather than
consented to Applicant’s use of [Applicant’s Mark].”
Opposer further argues that the “knowingly false
representation, which was never corrected, was material
because the examining attorney had previously refused the
Application due to likelihood of confusion with [opposer’s]
STORZ Marks and, based on Applicant’s false submission,
reversed course.”
Applicant claims, however, that while opposer “may
disagree with Applicant’s interpretation of the
[Agreement],” there was “no false or misleading statement
made to induce the Examining Attorney to approve the
application. The Examining Attorney was free to view the
text of the [Agreement] and come to a different conclusion.”
B. Likelihood of Confusion
Opposition No. 91174518
7
In support of its motion for summary judgment on its
likelihood of confusion claim, opposer argues that the
parties’ marks are confusingly similar “in appearance,
sound, connotation and commercial impression,” that the
parties’ goods and services “are in some cases identical,”
or at least similar or related, and that because there are
no limitations with respect to channels of trade in either
opposer’s registrations or applicant’s application, “it must
be presumed that the services of each would be offered in
all the normal channels of trade.” Opposer further argues
that its STORZ marks are “famous” and “should be accorded a
wide latitude of legal protection,” that there has been
significant actual confusion between the parties (but not
specifically related to Applicant’s Mark) and that “greater
protection is required than in the ordinary case” because
the parties’ goods are medical and surgical in nature.
Finally, although it does not specifically allege that
applicant had an improper intent in adopting or using
Applicant’s Mark, opposer claims that Applicant’s Mark
“violates the terms” of the parties’ Agreement.
Applicant claims that there are genuine issues of
material fact remaining for trial on the issue of likelihood
of confusion. Specifically, applicant claims that there are
“clear visual differences and phonetic differences between
the marks,” and that there are questions of fact regarding
Opposition No. 91174518
8
“the degree to which Applicant and Opposer overlap in their
channels of trade.” Applicant also claims that consumers of
the parties’ products “are highly sophisticated and less
prone to confusion.”
C. Applicant’s Affirmative Defenses
In addition to disputing opposer’s claims of fraud and
likelihood of confusion on the merits, applicant relies on
two of its affirmative defenses in arguing that opposer’s
motion should be denied. First, applicant claims that
opposer “is [contractually] estopped from maintaining the
present opposition” because Applicant’s Mark “is merely a
supplemented STORZ ENDOSKOP mark in accordance with” the
Agreement. Similarly, applicant claims that opposer is
equitably estopped from contesting registration of
Applicant’s Mark because applicant undertook “extensive
efforts to establish its marks as unique identifiers …,” in
reliance on the Agreement, opposer’s alleged approval of
marks similar to Applicant’s Mark, and opposer’s failure to
further pursue its 1989 objection to Applicant’s Mark for 14
years. Opposer, in its reply brief, argues that “none of
[opposer’s] conduct that pre-dates the Application can
support an equitable estoppel argument,” as a matter of law.
Second, applicant claims that the final decision in
Opposition Nos. 91160344 and 91160957 -- both brought by
opposer against applicant -- bars opposer’s claims in this
Opposition No. 91174518
9
proceeding. In the prior opposition proceedings, opposer
sought to prevent applicant’s registration of the marks
shown below

for medical products. On February 28, 2007, the Board
issued an order dismissing each proceeding with prejudice,
following opposer’s withdrawal of both oppositions with
prejudice. In its reply brief, opposer claims that its
“withdrawal of its oppositions to a mark that included the
word ‘Karl’ is wholly irrelevant to [opposer’s] current
opposition to a materially different mark that does not
include the word ‘Karl’ or otherwise comply with the
[Agreement].”
III. Decision
Summary judgment is only appropriate where there are no
genuine issues of material fact in dispute, thus allowing
the case to be resolved as a matter of law. Fed. R. Civ. P.
56(c). Opposer, as the movant seeking summary judgment,
bears the initial burden of demonstrating the absence of any
genuine issue of material fact. See Celotex Corp. v.
Catrett, 477 U.S. 317, 323 (1986); Sweats Fashions, Inc. v.
Pannill Knitting Co. Inc., 833 F.2d 1560, 1563, 4 USPQ2d
1793, 1796 (Fed. Cir. 1987). A factual dispute is genuine
Opposition No. 91174518
10
if, on the evidence of record, a reasonable fact finder
could resolve the matter in favor of the non-moving party.
See Opryland USA Inc. v. Great American Music Show Inc., 970
F.2d 847, 850, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde
Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 202, 22
USPQ2d 1542, 1544 (Fed. Cir. 1992).
The evidence on summary judgment must be viewed in a
light most favorable to the non-movant, in this case
applicant, and all justifiable inferences are to be drawn in
applicant’s favor. Lloyd’s Food Products, Inc. v. Eli’s,
Inc., 987 F.2d 766, 767, 25 USPQ2d 2027, 2029 (Fed. Cir.
1993); Opryland USA, supra. The Board may not resolve
issues of material fact; it may only ascertain whether
issues of material fact exist. See Lloyd’s Food Products,
987 F.2d at 766, 25 USPQ2d at 2029; Olde Tyme Foods, 961
F.2d at 200, 22 USPQ2d at 1542.
A. Standing
As a preliminary matter, “opposer’s standing has been
adequately established by the introduction” of the parties’
Agreement. Vaughn Russell Candy Co. v. Coolies in Bloom
Inc., 47 USPQ2d 1635, 1638 n. 7 (TTAB 1998).4

4 Opposer attempted to make its registrations of record by
attaching to its notice of opposition printouts from the Office’s
electronic database records showing the current status and title
of its registrations. While this would have been sufficient to
make the registrations of record under the current version of
Trademark Rule 2.122(d)(1), it was not sufficient under the
Opposition No. 91174518
11
B. The Agreement
“[A]lthough other courts would be the proper tribunals
in which to litigate a cause of action for enforcement or
breach of the contract here involved, that is not sufficient
reason for the board to decline to consider the agreement
….” Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d
1316, 1324, 217 USPQ 641, 647 (Fed. Cir. 1983); see also M-5
Steel Mfg. Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1095
(TTAB 2001). Applicant concedes as much, stating that “an
agreement that clearly dictates the parties’ rights with
respect to the marks at issue can be dispositive in
addressing the substance of an opposition.” Applicant’s
Opposition to Opposer’s Motion at 7.5 If the Agreement bars
applicant’s use of Applicant’s Mark, then applicant is not
entitled to registration. Vaughn Russell, 47 USPQ2d at
1637.
Because construction of a contract is a question of
law, resolution of the meaning and interpretation of a
contract is appropriate on summary judgment. See,
Interstate Gen. Gov’t Contractors, Inc. v. Stone, 980 F.2d
1433, 1434 (Fed. Cir. 1992) (“Interpretation of a contract
is a legal question …”). Furthermore, while opposer did not

version of the Rule in effect at the time opposer filed its
notice of opposition.
5 Applicant also concedes that “[t]here is no dispute that the
Agreement is in full force and effect ….” Applicant’s Opposition
at p. 9.
Opposition No. 91174518
12
specifically move for summary judgment based directly on the
Agreement, the parties’ interpretation of the Agreement is
part and parcel of their arguments regarding summary
judgment, and is the issue on which each party focuses most
extensively. The Board may therefore enter summary
judgment, sua sponte, based directly on the Agreement
itself, because applicant was on notice of the need to come
forward with all evidence relevant to the Agreement. See,
Celotex Corp., 477 U.S. at 325.
There is no dispute that the Agreement does not
expressly authorize applicant to use Applicant’s Mark –
applicant concedes as much. Opposer’s Motion Ex. 5
(Deposition of Jack A. Frydrych Tr. 80) (Applicant’s Mark is
“not directly spelled out in Paragraph 3” of the Agreement).
The question presented boils down to whether, as applicant
contends, Applicant’s Mark “is formed by supplementing STORZ
ENDOSKOP with approved formatives,” i.e. “the suffix ‘opy.’”
We find that it is not, and that the Agreement bars use of
Applicant’s Mark.
Most importantly, Applicant’s Mark does not contain the
approved German word ENDOSKOP, or KARL STORZ, K STORZ, etc.
It instead contains the English word ENDOSCOPY. In the
context of the parties’ Agreement, this difference is
particularly significant. As opposer points out, each of
the nine marks specifically authorized by the Agreement
Opposition No. 91174518
13
contain either: (a) the word KARL (or a K or KS); (b) the
German word ENDOSKOP (spelled with a “k”); and/or (c) an
indication that the mark is owned by applicant, the German
entity, i.e. STORZ-GERMANY. As opposer argues, each of the
specifically authorized marks “reduce the likelihood of
confusion between the U.S. company, Storz Instruments, and
the German company, Karl Storz, by identifying the user of
the mark as the German company ….” Opposer’s Motion at 5.
As opposer further argues, to allow applicant to use a mark
with the English word ENDOSCOPY, without any indication that
the mark is used by the German company, would make the
authorization for applicant to use the permitted mark KARL
STORZ-ENDOSCOPY superfluous. Agreements may not be
interpreted in such a manner. See, Gardiner, Kamya &
Associates, P.C. v. Jackson, 467 F.3d 1348, 1353 (Fed. Cir.
2006).
To “supplement” means to “complete,” or “add to.”
Random House College Dictionary 1320 (1st ed. rev. 1984).
Quite simply, Applicant’s Mark is not a “supplemented” STORZ
ENDOSKOP mark, because it uses the English word ENDOSCOPY,
rather than the German word ENDOSKOP; in addition, the mark
does not contain KARL or the letter K or letters KS. The
mark is therefore outside of the specific uses permitted by
the Agreement. Because the Agreement permits use of the
Opposition No. 91174518
14
STORZ mark only as specified, we conclude that Applicant’s
Mark is prohibited.
C. Applicant’s Defenses
We are not persuaded by applicant’s defenses. First,
as explained above, applicant’s contractual estoppel
argument fails because the Agreement bars use or
registration of Applicant’s Mark, and permits opposer to
object to Applicant’s Mark. Applicant’s equitable estoppel
argument is also unavailing. Conduct which occurs prior to
the publication of the application for opposition generally
cannot support a finding of equitable estoppel. See,
Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes, Inc., 971
F.2d 732, 734, 23 USPQ2d 1701, 1703 (Fed. Cir. 1992);
National Cable Television Ass’n Inc. v. American Cinema
Editors Inc., 937 F.2d 1572, 1581, 19 USPQ2d 1424, 1432
(Fed. Cir. 1991). While opposer apparently did not pursue
its objection to use of Applicant’s Mark between 1989 and
2003, there is no evidence that opposer knew or should have
known of applicant’s alleged use of Applicant’s Mark in the
U.S. In fact, opposer seeks summary judgment on its
unpleaded claim that applicant does not have a bona fide
intention to use Applicant’s Mark in the U.S.
Second, applicant’s res judicata argument based on
prior Opposition Nos. 91160344 and 91160957 fails because
the marks at issue in those proceedings were different than
Opposition No. 91174518
15
the mark at issue here. Chromalloy American Corp. v.
Kenneth Gordon (New Orleans) Ltd., 736 F.2d 694, 698, 222
USPQ 187, 190 (Fed. Cir. 1984) (“The claim against LADY
GORDON is simply not the same claim as one against GORDON OF
NEW ORLEANS.”); Institut National Des Appellations d’Origine
v. Brown-Forman Corp., 47 USPQ2d 1875, 1894 (“applicant’s
MIST AND COGNAC mark … is a different mark … from CANADIAN
MIST AND COGNAC …”). As opposer notes, those marks included
the wording “KARL STORZ,” which was among the marks
explicitly permitted by the Agreement. Because they
involved a materially different mark, the prior
adjudications cannot bar opposer’s claims in this
opposition.
D. Conclusion
Because the Agreement prohibits the use of Applicant’s
Mark, opposer’s motion for summary judgment is GRANTED. The
opposition is sustained.6
News from the TTAB
The USPTO published a notice of final rulemaking in the
Federal Register on August 1, 2007, at 72 F.R. 42242. By
this notice, various rules governing Trademark Trial and
Appeal Board inter partes proceedings are amended. Certain
amendments have an effective date of August 31, 2007, while
most have an effective date of November 1, 2007. For
further information, the parties are referred to a reprint
of the final rule and a chart summarizing the affected
rules, their changes, and effective dates, both viewable on
the USPTO website via these web addresses:

6 Given our findings with respect to the Agreement, there is
no need to specifically consider opposer’s likelihood of
confusion or fraud claims.
Opposition No. 91174518
16
http://www.uspto.gov/web/offices/com/sol/notices/72fr42242.pdf
http://www.uspto.gov/web/offices/com/sol/notices/72fr42242_FinalRuleChart.pdf

By one rule change effective August 31, 2007, the Board's
standard protective order is made applicable to all TTAB
inter partes cases, whether already pending or commenced on
or after that date. However, as explained in the final rule
and chart, this change will not affect any case in which any
protective order has already been approved or imposed by the
Board. Further, as explained in the final rule, parties are
free to agree to a substitute protective order or to
supplement or amend the standard order even after August 31,
2007, subject to Board approval. The standard protective
order can be viewed using the following web address:
http://www.uspto.gov/web/offices/dcom/ttab/tbmp/stndagmnt.htm
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